On June 19, 2017 the United States Supreme Court held that Section 2(a) of the Lanham Act (“Section 2(a)”), which prohibits registration of a trademark that may disparage people, “institutions, beliefs or national symbols,” violates the First Amendment and is, therefore, unconstitutional. The decision was unanimous, but the justices divided over the proper legal framework to use to determine the constitutionality of the law.

The case required the Court to consider two issues, namely (i) whether a trademark registration is a type of speech that does not implicate the First Amendment, and (ii) the appropriate First Amendment legal analysis to use to determine the constitutionality of the law.

The facts were straight forward. Simon Shiao Tam, the “front man” for the Asian-American dance band called The Slants, filed an application to register the trademark THE SLANTS for “entertainment, namely live performances by a musical band.” The application was refused on the basis that the trademark is disparaging of people of Asian descent. The Trademark Trial and Appeal Board upheld the refusal, but the Court of Appeals for the Federal Circuit reversed.

In affirming all eight justices (Justice Gorsuch did not participate as the case was argued before he joined the Court) concluded that federal registration of a trademark confers important legal rights and benefits to the trademark owner and rejected the Government’s attempt to classify a trademark as a type of speech not protected by the First Amendment. Ultimately, the deciding justices agreed that Section 2(a)’s restriction on speech violated the First Amendment, but divided over the appropriate legal framework required to reach that conclusion. Justice Alito (joined by Chief Justice Roberts and Justices Thomas and Breyer) found that Section 2(a) did not pass constitutional scrutiny under the framework used to determine the constitutionality of restrictions on commercial speech. In contrast Justice Kennedy in a concurring opinion (joined by Justices Ginsburg, Sotomayor and Kagan) found Section 2(a) unconstitutional because it was view point discrimination.

All justices agreed that a trademark is a form of speech which is protected by the First Amendment and rejected the Government’s position that a trademark registration is a type of speech which is immune from First Amendment scrutiny. Specifically, the Justices found that a trademark registration is not the government’s own speech, a form of government subsidy or a “government program” and clarified the limits to these narrow exceptions to First Amendment rights. For example, in 2015, in Walker v. Sons of Confederate Veterans, a divided court held that Texas could refuse to allow specialty license plates bearing the Confederate battle flag on the basis that the plates would be viewed as the Texas government’s own speech because the public would associate the license plates with an official government position. Justice Alito distinguished the government speech implications of federally registered trademarks from license plates as follows:

. . ., it is far-fetched to suggest that the content of a registered mark is government speech. If the federal registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently. It is saying many unseemly things. It is expressing contradictory views. It is unashamedly endorsing a vast array of commercial products and services. And it is providing Delphic advice to the consuming public.

Where the Justices disagreed was whether the analysis to determine the constitutionality of Section 2(a) should be based upon the legal standards for assessing the First Amendment as applied to commercial speech or whether the key determinative issue was whether Section 2(a) amounted to viewpoint discrimination. Commercial speech is broadly defined as speech that proposes a commercial transaction (e.g. advertisements). Generally commercial speech is entitled to less protection under the First Amendment than non-commercial speech. Viewpoint discrimination refers to government laws and rules that favor one opinion over another (e.g. allowing a “pro-life” proponent to speak on government property, but banning a “pro-choice” proponent). Government laws and rules deemed to be viewpoint discrimination generally receive the highest level of scrutiny under the First Amendment.

Ultimately Justice Alito did not believe it necessary to resolve the issue of which analysis to apply because in his view Section 2(a) could not pass constitutional scrutiny even when analyzed under the less stringent commercial speech framework.

Justice Kennedy wrote separately to explain “in great detail why the First Amendment’s protections against viewpoint discrimination apply to the trademark” at issue.

“At its most basic, the test for viewpoint discrimination is whether – within the relevant subject category – the government has singled out a subset of message for disfavor based on the views expressed. . . In the instant case, the disparagement clause the Government now seeks to implement and enforce identifies the relevant subjects as “persons, living or dead, institutions, beliefs, or national symbols.” Within that category, an applicant may register a positive or benign mark but not a derogatory one. The law thus reflects the Government’s disapproval of a subset of messages it finds offensive. This is the essence of viewpoint discrimination.

The differing perspectives from the two four-justice blocs muddles the analysis and will likely mute the extent to which the opinion can be used as precedent to determine the proper legal analysis to use in other First Amendment contexts. However, the effect of the decision is clear — the Trademark Office should (i) allow trademarks deemed to be disparaging to register and (ii) refuse to cancel registrations for marks alleged to be disparaging.